Monotag Corp. dba Signs First v. Melinda Diane Byrd

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monotag Corp, dba Signs First v. Melinda Diane Byrd

Case No. D2001-0561

1. The Parties

The Complainant is Monotag Corporation, dba Signs First, a Tennessee corporation

whose principal place of business is at 813 Ridge Lake Blvd., Suite 495, Memphis,

Tennessee 38120, USA. The Complainant is represented by Nicolette R. Simms of

Dinsmore & Shohl LLP with a mailing address of 1900 Chemed Center, 255 E.

Fifth Street, Cincinnati, Ohio 45220, USA.

The Respondent is Melinda Diane Byrd, whose mailing address is P.O. Box 210245,

Nashville, Tennessee 37211-0245, USA. Respondent is represented by G. Scott

Thomas and Robert L. Brewer of Bass, Berry & Sims, PLC with a mailing address

of 315 Deaderick Street, Suite 2700, Nashville, Tennessee 37238-0002, USA.

2. The Domain Name and Registrar

The disputed domain name is <signsfirst.com>. The registrar of the domain

name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia

20170, USA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("the

Center") on April 18, 2001 and assigned case number D2001-0561.

The Center verified that the Complaint satisfied the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy ("Policy"),

the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"),

and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules").

Notification of the Complaint and commencement of the administrative proceedings

were communicated by the Center to the Respondent by e-mail, facsimile and courier

on April 26, 2001. The Panel has seen the courier receipt and is satisfied that

the delivery of the Commencement Notification is in conformity with the relevant

requirements under paragraph 2 and paragraph 4 of the Rules and the relevant

provisions of the Supplemental Rules.

No response was received by the Center from Respondent on or before May 15,

2001, which was the last day for Respondent to submit a response under paragraph

5 of the Rules and the relevant provisions of the Commencement Notification.

A notification of Respondent’s default was communicated by the Center to Respondent

on May 15, 2001. On May 16, 2001, the Respondent sent an answer to

the Complaint by e-mail with a copy to Complainant. On May 17, 2001, the Respondent

sent the original answer (sent via email) and an Amended Answer by email and

courier to the Complainant and the Center.

On May 16, 2001, the Center sent an acknowledgement of receipt to the Respondent

stating that because the Response was submitted late, the Administrative Panel

("Panel") will decide in its sole discretion whether to consider the

Response in deciding the case. On May 23, 2001, the Panel was selected and decided

to allow the late submission from Respondent. The Panel is satisfied that the

answer and the amended answer satisfied the Rules and the Supplemental Rules

with regard to notification.

On May 24, 2001, the Panel granted the Complainant’s request to file a reply

to the Response, and correspondingly granted the Respondent’s request to file

a sur-reply. Complainant’s reply was due June 7, 2001, and Respondent’s sub-reply

was due June 21, 2001. The reply was filed on June 7, 2001, and sent by

email to Respondent at the e-mail address noted above. The Panel is satisfied

that the reply satisfied the Rules and the Supplemental Rules with regard to

notification. A sur-reply was filed on June 20, 2001, and sent by e-mail

to Complainant at the e-mail address noted above. The Panel is satisfied that

sur-reply satisfied the Rules and the Supplemental Rules with regard to notification.

Based on a Statement of Acceptance and Declaration of Impartiality and Independence,

duly signed by the Panel and dated May 23, 2001, the Panel was duly appointed

by the Center on May 23, 2001. A notification of appointment of the Panel was

communicated by the Center to both Complainant and Respondent on the same date.

In addition to the submissions noted above, on June 5, 2001, the Panel was

copied on an email from Complainant regarding changes to the website associated

with the domain name <signsfirst.com>, and reciting an excerpt from Network

Solution's Service Agreement directed to the prohibition on changes to domain

name records while a domain name registration is in dispute. Despite the fact

that a change to the website is not the same as a change to the domain name

record, on the same day, Respondent replied by stating that Respondent had not

initiated or requested the replacement of the website with a third party's content

and stating that the hosting company, <choicemall.com>, had "arbitrarily

replaced the content of Melinda Byrd's website without her knowledge or permission."

Apparently, at that time, the website was advertising "Appliance Wholesale Warehouse."

Respondent stated that it "does not and never has held any connection or

affiliation with ‘Appliance Wholesale’," and has "never even heard

of the company."

On July 17, 2001, the Panel received another e-mail from Complainant stating

that the content of the website associated with the <signsfirst.com> domain

name had once again changed, in the manner noted in Section 4.C. of this decision,

and to "advise the Panel that this is not the initial version of the website

that appeared when Complainant filed its Complaint with WIPO." In response,

Respondent stated in an e-mail also dated July 17th, that "Respondent has

not instructed the hosting company to modify the <signsfirst.com> Website

content after the commencement of this suit or after Complainant's filing with

WIPO. Any changes to the Website have not been at the direction

or request of the Respondent."

The date scheduled for the issuance of the Panel’s decision is July 23, 2001.

4. Factual Background

A. Complainant

The Complainant is Monotag Corporation dba, Signs First ("Signs First").

The Complainant has owned federally registered service mark SIGNS FIRST since

January 25, 1993, and first used the mark in 1990. (See Annex A,

U.S. Trademark Registration).

The mark is used in connection with "custom manufacturing of indoor and

outdoor signs." (See Annex A). Signs First is a franchisor to manufacturers

of custom indoor and outdoor signs. On May 23, 1996, Respondent entered into

a Franchise Agreement ("Agreement") with Complainant. (See

Annex 4, Franchise Agreement). Under the Agreement, Respondent was licensed

to use Complainant’s service marks in connection with the operation of the business.

The Agreement was terminated on March 10, 2000. (See Annex 5, Termination

Letter). On March 23, 2001, counsel for Complainant informed Respondent’s counsel

that her continued use of the domain name violated Complainant’s rights and

demanded that Respondent transfer the domain name to Complainant. (See Annex

6, Cease and Desist Letter). On March 30, 2001, Respondent’s former counsel

responded and stated that he no longer represented Respondent but would forward

the letter accordingly. (See Annex 7, Representation).

B. Respondent

Respondent is Melinda Diane Byrd ("Byrd"). Respondent is a former

franchise owner of a Signs First franchise (See Annex B, Franchise Purchase

Agreement ("Agreement"), dated March 23, 1996)). Respondent acknowledges

that the Agreement was terminated on March 10, 2000 (See Annex C, Termination

Agreement).

Respondent registered the domain name <signsfirst.com> for her former

franchise with Network Solutions on July 30, 1997. Network Solutions’ records

lists Respondent as one of the owners of the domain name. (See Annex

D, Network Solutions Ownership Record).

C. Additional Facts

The existence of the collateral dispute between the parties regarding changes

to the website, as noted above, encouraged the Panel to review the website associated

with the domain name. This website is currently comprised of a single page with

text as follows:

HAVE

A QUESTION ABOUT

SIGNS?

FIRST,

CONTACT US!

<SIGNSFIRST@EARTHLINK.NET>

PHONE

615-834-4111

FAX

615-834-5111

This website also includes the following metadata:

meta name="description" content="Do you have something to say? Let us help!

We can help with most of your advertising needs. We make signs, banners, logo

design & reproduction, vehicle lettering, magnetics, static cling, labels,

special event and promotional items and much much more!">

<meta name="keywords" content="signs signage banners graphics logos reproductions

lettering decals advertising promotional magnetics vehicle graphic artist artwork

numbers fonts vinyl graphics lighted awnings flags brass sandblasted digital

imaging silk screening">

5. Parties’ Contentions

A. Complainant

Complainant contends:

(i) The domain name <signsfirst.com> registered by Respondent is identical

and confusingly similar to the SIGNS FIRST mark. Upon entering the domain name,

the user is redirected to <www.choicemall.com>/<signsfirst.com>.

(ii) Respondent has no rights or legitimate interests in the domain name <signsfirst.com>.

Under the terms of the Termination Agreement, Respondent was required to terminate

all interests that used the service mark SIGNS FIRST, thereby ending Respondent’s

right or legitimate interest, if any, in the domain name.

(iii) Respondent’s bad faith registration and use of <signsfirst.com>

is a violation of the terms of the Agreement. Respondent was responsible for

canceling any assumed names or equivalent registration, which contained the

SIGNS FIRST service mark. The Agreement also provided that Respondent may not

sell any interest in the franchise without first offering the same to Complainant

in writing. Complainant has not received any offer in writing for the sale of

the franchise. Therefore, Respondent cannot offer to sell the franchise to others.

Respondent offered to sell the domain name to Complainant in excess of the cost

of registration.

B. Respondent

Respondent contends:

(i) Complainant has not offered any evidence that there has been any likelihood

or actual confusion arising from Respondent’s use of the service mark.

(ii) Respondent contends she sold the domain name <signsfirst.com>, has

not used it for a year and if she did use the domain name, it has become a way

for Internet users and friends to contact her.

(iii) The domain name was not registered in order to prevent Complainant from

reflecting the mark in a corresponding domain name. The domain name was not

registered for the purpose of disrupting the business of a competitor, nor was

it registered to be sold. Respondent has not attempted to imply that she has

any affiliation to the website, location, products or services of Complainant.

6. Discussion and Findings

(i) The domain name registered by Respondent is identical or confusingly similar

to a mark owned by Complainant.

The domain name in dispute is <signsfirst.com>. The domain name is identical

in appearance to the SIGNS FIRST mark. Indeed, it is the exact character string

of Complainant’s federally registered service mark SIGNS FIRST. Attached as

Annex 3 of the Complaint are copies of the registered service marks for SIGNS

FIRST.

Given that Complainant is only required to show that the "domain name

is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights,"(emphasis added by the Panel) and the

domain name is identical to Complainant’s federally registered service mark,

Respondent’s claim of no actual or likely confusion is irrelevant.

Accordingly, the Panel finds for Complainant on the first element.

(ii) Respondent has no rights or legitimate interests in respect of the

domain name.

Paragraph 6 of the Policy states that "[w]e will not participate in any

way in any dispute between you and any party other than us regarding the registration

and use of your domain name." If litigation had been pending between the

parties relating to the domain name, the Panel might be inclined to suspend

this action pending the outcome of that litigation, but the Panel was only informed

of a decision in previous litigation related to this matter, 3MB, L.L.C.

v. G.I.M.C., Inc., No. 98-788-III, Memorandum and Order, Chancery

Court for the State of Tennessee 20th Judicial District, Davidson County, Part

III, (December 22, 1999). The Panel was not informed of any other

pending litigation between the parties relating to the domain name, although

the possibility of such litigation was mentioned by the Respondent, so the question

of Respondent’s rights or legitimate interests to the domain name will be decided

on the facts herein provided.

The parties agree that the Agreement was terminated. Accordingly to Complainant,

under the terms of the Termination Agreement, Respondent was required to terminate

its use of the SIGNS FIRST service mark and cancel any assumed names or equivalent

registrations (presumably referring to trademark registrations, but not excluding

domain name registrations) containing the service mark. Respondent, on the other

hand, has stated numerous times that she sold the domain name:

"[Respondent] states she sold the domain name . . . ."(Footnote

1)

"[I]n 1999, [Respondent] states she was forced to sell the domain . .

. ." (Footnote 2)

"[Respondent] does not even own the domain name in dispute . . . ."(Footnote

3)

"Again, [Respondent] emphasizes that she sold the domain name .

. . ."(Footnote 4)

Given the above alone, it would be impossible to find that Respondent has a

continuing right or legitimate interest in the domain name, irrespective of

whether she once had such a right or interest because she claims to have sold

the domain name.

Where no other facts involved, this issue would be readily resolved, but additional

facts do complicate the matter. For example, if Respondent has sold and has

not used the domain name, then why is Respondent still listed in WHOIS as the

Registrant (at least in part), Administrative Contact and Billing Contact for

that domain name? For that matter, if Respondent does not own or use the domain

name, then why does Respondent even care if the domain name is transferred to

Complainant?

The answers to these two questions appear to be that Respondent cares about

the domain name because she continues to the own an interest in the domain name,

continues to operate a business in competition with Complainant, and continues

to utilize the website to attract businesses to that competing business. The

Panel is not persuaded by Respondent’s e-mail replies dated June 5th and July

17th, in which Respondent stated that <choicemall.com> had "arbitrarily

replaced the content of Melinda Byrd's Website without her knowledge or permission,"

or that "[a]ny changes to the Website have not been at

the direction or request of the Respondent."

Even though Respondent claims to have sold the domain name, she still refers

to the associated website as her website (i.e., the "Melinda Byrd Website")

and she continues to be listed as the registrant (i.e., owner) of the domain

name in the WHOIS listing. Furthermore, the WHOIS listing denotes the Administrative

Contact and Billing Contact email address as <signsfirst@earthlink.net>,

which is the same email address currently advertised on the website. Likewise,

Melinda Byrd’s phone numbers, as Administrative Contact, are exactly the same

as the phone numbers listed on the website. Thus, even if Respondent did not

direct or request the changes to the website, the website is clearly being operated

for her benefit, and for the benefit of a competing business. Such continued

use also appears to be in contravention to the Termination Agreement, as further

noted by Complainant’s Cease and Desist Letter. Respondent’s mere, at one time,

potentially legitimate registration of the <signsfirst.com> domain name

alone cannot constitute a continuing right or legitimate interest in that domain

name.

The Panel finds Respondent has no current right or legitimate interest in respect

of the domain name.

Therefore, the Complainant succeeds on the second element.

(iii) The domain name has been registered and is being used in bad faith.

For the purposes of Paragraph 4(a)(iii) of the Policy, there are a number of

different circumstances that can constitute evidence of bad faith. If the Panel

were to accept the facts as stated by Complainant regarding Respondent’s offer

to sell the domain name in excess of the cost of registration, such an offer

could constitute evidence of bad faith, especially if the domain name registration

was transferred to the current Registrants after the Agreement was terminated.

In this regard, it should be noted that while Respondent never indicated the

price she was willing to accept, she did state that she had offered to sell

the domain to the Complainant "four different times."(Footnote

5) Unfortunately, the circumstances surrounding Respondent’s acquisition

of the domain name are cloudy at best, so the Panel is not comfortable deciding

the issue of bad faith on this basis alone.

The Panel does, however, note that a number of the statements made by Respondent

in its Answer, Amended Answer and sur-reply, are confusing and make it difficult

for the Panel to accept Respondent’s assertions. For example:

- In the Respondent’s Sur-Reply the Respondent refers to "Meece’s fraud"

(emphasis added). However, the Chancery Court for the State of Tennessee Court

held that Respondent "failed to carry their burden of proof on the cause

of action for fraud ...."(Footnote 6)

The same claim of fraud was made in the Respondent’s Answer, although it was

corrected when the Answer was amended (Footnote

7). This characterization of the Chancery Court’s holding belies Respondent’s

recitation of the facts.

- As noted above, Respondent states that she sold the domain name (Footnote

8). Nevertheless, she still appears to be one of the Registrants, she is

still listed as the Administrative Contact and Billing Contact, and by her own

admission, she still appears to be operating the website in competition with

other franchisees of Complainant, and therefore Complainant itself. These facts

allow for one of two possible conclusions to be reached.

The first possible conclusion is that the Respondent sold the domain name to

an unknown entity that is utilizing the website to compete with Complainant,

but for reasons that are a mystery to the Panel, the Respondent has not bothered

to transfer the domain name registration or have the content of the information

on the website corrected.

The second possible conclusion is that the Respondent has not sold the domain

name and has misrepresented some of the facts to the Panel (Footnote

9).

- Respondent also states that she has not used the domain name for "almost

one year."(Footnote 10) Someone, however,

who very much appears to be Respondent, is using the domain name for a website

that is directly competing with Complainant.

The Panel is inclined to label Respondent’s confusing assertions to the Panel

as bad faith, but does not feel the need to do so in case Respondent is, indeed,

confused, and in view of the other determinant avenues that are available. For

example, Paragraph 4(b)(iv) of the Policy states that use of the domain in an

intentional attempt to attract, for commercial gain, Internet users to the either

the Respondent’s website or another on-line location, by creating a likelihood

of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of the Respondent’s website or the other location or of a product

or service on the Respondent’s website or location, is evidence of bad faith.

Any Internet user attempting to find Complainant using a domain name as a search

tool is likely to attempt entering the <signsfirst.com> domain name into

their browser, and when that user does so, the users is going to be directed

to the website noted above in the facts. This website, regardless of whether

its is being run by Respondent or someone else, since it uses Complainants service

mark in the domain name and is offering services in Complainant’s exact same

line of business, is likely to confuse the user by leading the user to believe

that the website is somehow affiliated with Complainant.

Accordingly, Complainant succeeds on the third element.

7. Decision

In light of the foregoing, the Panel decides that the domain name registered

by Respondent is identical to the trademarks of Complainant, Respondent has

no right or legitimate interest in respect to the domain name, and Respondent’s

domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Uniform Domain Name Dispute

Resolution Policy, the Panel requires that registration of the domain name <signsfirst.com>

be transferred to Complainant.

The Panel directs the Registrar, Network Solutions, Inc., to transfer ownership

of the domain name <signsfirst.com> to the Complainant.

Timothy D. Casey

Sole Panelist

Dated: July 19, 2001

Footnotes:

1. See Respondent Melinda Byrd’s Answer in Accordance

with the Uniform Domain Name Dispute Resolution Policy, at 5 [hereinafter "Respondent’s

Answer"]. (back to text)

2. See Respondent’s Answer at 6. (back

to text)

3. See Respondent’s Answer at 6. (back

to text)

4. See Respondent’s Answer at 7 (emphasis added). (back

to text)

5. See Respondent’s Answer at 5. (back

to text)

6. 3MB, L.L.C. v. G.I.M.C., Inc., No. 98-788-III, Memorandum

and Order, Chancery Court for the State of Tennessee 20th Judicial District,

Davidson County, Part III, (December 22, 1999). (back to text)

7. See Respondent Melinda Byrd’s Amendment to Answer,

dated May 17, 2001. (back to text)

8. See Respondent’s Answer at pp. 5-7. (back

to text)

9. The Panel also notes that in the Respondent’s Sur-Reply

there was no mention of the sale of the domain name, See Respondent’s

Sur-Reply In Accordance With the Uniform Domain Name Dispute Resolution Policy,

[hereinafter Respondent’s Sur-Reply], but this does not change the earlier statements

made by the Respondent. (back to text)

10. See Respondent’s Answer at 7. (back

to text)